2010 TMOB 149 (September 16, 2010)
Overview
The Trademarks Opposition Board reiterated the influence of acquired distinctiveness in a confusion analysis and demonstrated that jurisprudence based on confusion between two trademarks may not apply in cases where there is an allegation of confusion between a trademark and a trade name.
Abstract
The Trademarks Opposition Board ("Opposition Board") found that the applied-for WWW.CANADIANFLYINFISHING.COM & DESIGN trademark was confusing with the opponent's CANADIAN FLY-IN FISHING and CANADIAN FLY-IN FISHING & DESIGN trademarks and CANADIAN FLY-IN FISHING trade name despite the finding that the opponent's trademarks and trade name did not possess any inherent distinctiveness. The applicant argued that the opponent should not be permitted to rely on generic features of the mark to establish confusion. The Opposition Board rejected this assertion on the basis that the opponent's trademark and trade name had acquired distinctiveness. Further, the Opposition Board suggested that cases involving confusion between two trademarks could be distinguished when considering confusion between a trademark and a trade name.
Case summary
Facts. In March 2002, Lac Seul Airways, Ltd. (the "applicant") filed application serial no. 1,134,529 to register the trademark WWW.CANADIANFLYINFISHING.COM & DESIGN, shown below, based on use since November 30, 2000, in association with services for the "provision of air transportation and outpost cabin accommodation."
The Examiner required the applicant to disclaim the descriptive terms WWW.CANADIANFLYINFISHING.COM, OUTPOSTS, AIRWAYS, LTD. and LAC SEUL. Further, the Examiner cited as confusing two co-pending applications for the marks CANADIAN FLY-IN FISHING and CANADIAN FLY-IN FISHING & DESIGN, shown below, both owned by Canadian Fly-In Fishing (Red Lake) Ltd., for use in association with services similar to those specified in the subject application.
The applicant agreed to disclaim the descriptive terms at issue but submitted that the cited marks should be afforded a narrow ambit of protection and that the overall differences between the marks were sufficient to distinguish between them. The Examiner accepted the applicant's submissions, and the revised application was advertised for opposition.
The applied-for trademark was opposed by Canadian Fly-In Fishing (Red Lake) Ltd. (the "opponent") on the grounds that, among other things, the applicant's mark was confusing with the opponent's previously applied-for trademarks, CANADIAN FLY-IN FISHING and CANADIAN FLY-IN FISHING & DESIGN, which had been used in Canada since 1965 and 1997 respectively, and the opponent's trade name, CANADIAN FLY-IN FISHING, which had previously been used in Canada since 1965. The applicant denied the allegations.
The opponent provided evidence that the trademark and trade name CANADIAN FLY-IN FISHING had been used in association with providing recreational tourist services in and around Red Lake, Ontario, since 1965 and that it began using the mark CANADIAN FLY-IN FISHING & DESIGN in 1990.
The applicant relied on as evidence the Examiner’s objection to the opponent’s trademark applications for CANADIAN FLY-IN FISHING and CANADIAN FLY-IN FISHING & DESIGN on the basis that the trademarks were clearly descriptive of the opponent’s services. Further, the applicant provided evidence that the descriptions "fly-in fishing" and "Canadian fly-in fishing" are now used generally throughout Canada.
Analysis. The main issue described by the Opposition Board was whether as of November 30, 2000 (the date of first use claimed by the applicant) there would be confusion as to whether the applicant's services sold under the applied-for trademark were services provided by or endorsed by the opponent.
In assessing the likelihood of confusion, the Opposition Board assessed the factors set out in section 6(5) of the Trademarks Act. In considering the inherent distinctiveness of the marks, the Opposition Board found that there was no inherent distinctiveness in the opponent's CANADIAN FLY-IN FISHING trademark and trade name as "the term 'Canadian fly-in fishing' had become a commonly used term to describe recreational fishing in remote Canadian locations accessible only by small aircraft" (paragraph 24). However, the Opposition Board held that the opponent's trademark and trade name had acquired distinctiveness as a result of long use and advertising. In contrast, the Opposition Board found that there was no evidence that the applied-for trademark had acquired any distinctiveness, and further, the design features of the applied-for trademark were suggestive of the applicant’s services.
Additionally, the Opposition Board held that (a) the length of time that the marks had been in use, (b) the fact that the nature of the businesses and trades overlapped heavily, and (c) the very high degree of resemblance between the opponent's trademark and trade name and the applicant’s trademark in all respects, were disadvantageous to the applicant.
At the oral hearing, counsel for the applicant argued that the opposition must be rejected based on the finding of the Federal Court in Questor Commercial Inc. v. Discoverer Services Ltd. (1979), 46 C.P.R. (2d) 58 (F.C.T.D.) ("Questor") where it was held that the opponent was not permitted to rely on the common features "muffler center" in the opponent's trademark SPEEDY MUFFLER CENTER and the applicant’s trademark MUFFLER CENTER & DESIGN to establish confusion as these words were generic and common to the trade.
The Opposition Board distinguished Questor on the basis that there was no evidence of acquired distinctiveness in Questor. Further, the Opposition Board questioned whether a case involving confusion between two trademarks can be applied in a case involving confusion between a trademark and a trade name. In particular, the Opposition Board stated:
[A] trade-name is fundamentally different from a trademark. A trade-name is not defined as a trademark in s. 2 of the Act (as are certification marks, distinguishing guises, and proposed trademarks). Further, there is no requirement in the Act for a trade-name to distinguish particular wares or services. Thus, even if Questor does not permit the present opponent to rely on its trademarks, the opponent may still rely on its trade-name. (paragraph 29)
As a result, the Opposition Board held that the applicant had not met its burden of proving that the applied-for trademark was not confusing with the opponent’s trademarks and trade name, and the application was refused.
Conclusion
This case reiterates the influence of acquired distinctiveness in a confusion analysis and demonstrates that jurisprudence based on confusion between two trademarks may not apply in cases where there is an allegation of confusion between a trademark and a trade name.
Jayda A. Sutton, Toronto